Aetna Inc. v. Jacoby Partners 1999-2, L.L.C.
Claim Number: FA0209000125816
Complainant is Aetna Inc., Hartford, CT (“Complainant”). Respondent is Jacoby Partners 1999-2, L.L.C., Mill Valley, CA (“Respondent”) represented by Ben F. Jacoby.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aetna.net>, registered with Network Solutions.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 25, 2002; the Forum received a hard copy of the Complaint on September 30, 2002.
On September 27, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <aetna.net> is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 4, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 24, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on October 23, 2002.
Complainant filed an untimely Additional Submission and it is within the Panel’s discretion what weight to afford it. The Panel received information which was not submitted in accordance with the rules and did not consider that material.
On November 8, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is Aetna, Inc. of Hartford, Connecticut. Since 1853, Complainant and its affiliates have continuously used the AETNA name and mark in connection with a wide variety of insurance, financial, and health care services. Complainant is well known and established in the United States and throughout the world, and has created substantial goodwill in the AETNA name and marks.
Complainant first registered the AETNA mark with the United States Patent and Trademark Office on October 30, 1923. Complainant currently owns many U. S. federal trademarks that are duly registered, including AETNA, Reg. No. 1,939,423, registered December 5, 1995 in international class 42 for “health care services provided through preferred provider or exclusive provider organizations, health maintenance organizations and point of service plans”
Complainant owns trademark registrations and applications for its AETNA marks in thirty-four other countries and/or regions.
Complainant owns directly or through a wholly-owned subsidiary, many domain name registrations, that correspond with its famous marks, including but not limited to: <aetna.com>, <aetna.us>, <aetna.biz>, <aetha.info>, and <aetnainc.com>.
Complainant’s public websites received over 26.4 million “hits” in July 2002.
On or about November 2, 1999, Respondent registered <aetna.net> for a period of two years.
On or about December 31, 1999, Respondent sent an electronic message to Complainant informing Complainant that Respondent was owner of the domain name <aetna.net>. Respondent’s website at the time consisted of a single page with the words “Alternative Educational Training for New Arrivals.”
On January 4, 2000, Complainant sent a cease and desist letter to Respondent via certified mail.
On or about January 13, 2000, Respondent agreed in a telephone conversation to transfer the domain name registration to Complainant and Complainant agreed to pay a fee of $70.00.
On or about April 28, 2000, Complainant sent Respondent the Registrant Name Change Agreement to transfer the domain name <aetna.net> from Respondent to Complainant.
On or about September 13, 2000, under cover demanding Complainant to cease and forever waive its right to pursue any civil or criminal action related to the <aetna.net> domain name, Respondent returned the signed Transfer Form to Complainant, absent page 3 and the required notarization. On September 22, 2000, Complainant sent another Transfer Form to Respondent confirming that Complainant will not pursue any legal action once the Transfer Form is properly completed and received by Complainant. Respondent did not send a properly completed Transfer Form.
On about June 22, 2001, Respondent renewed the domain name registration for <aetna.net> through November 2, 2006.
At some point after September 3, 2002, Respondent removed the “Under Construction” page and redirected <aetna.net> to “Greek mythology” search results on <google.com>.
The domain name <aetna.net> is identical and confusingly similar to Complainant’s corporate name and the AETNA marks registered with the United States Patent and Trademark Office and other trademark registries throughout the world.
Respondent has no rights or legitimate interests in the domain name.
Respondent first registered and used the domain name in bad faith in 1999.
Respondent’s renewal of the domain name, with full knowledge of the dispute between the parties and Complainant’s trademarks, was done in bad faith and Respondent’s use of the domain name is in bad faith.
Respondent is Ben F. Jacoby and Devorah E. Jacoby, d/b/a Jacoby Partners of Mill Valley, California.
Respondent does not dispute Complainant’s statement with respect to the date upon which <aetna.net> was registered or the term for which it was registered.
Respondent disagrees with Complainant’s interpretation of Respondent’s December 31, 1999 e-mail. There was never any confusion between <aetna.net> and <aetna.com>. Such confusion was impossible based upon the physical appearance of the websites and the products and services offered on the sites. Complainant shows no evidence of confusion.
Respondent received the cease and desist letter. Respondent received the transfer documents from Complainant but never completely filled out the documents. Respondent rejected the transfer and no transfer ever happened.
Respondent registered <aetna.net> on or about November 2, 1999 for the purpose of developing a non-commercial website devoted to Greek Mythology. At the time Respondent registered the domain name, it was not aware of Complainant’s trademark rights.
Shortly after registering the domain name, Respondent became aware of the general controversy regarding domain name disputes. Respondent then conducted a search through the Internet of the name “aetna” and discovered it was in widespread use. Respondent then contacted Complainant so as to avoid any potential future confusion surrounding the use of the domain name <aetna.net>.
Complainant’s cease and desist letter forced Respondent to delay development of the website pending resolution of this domain name dispute.
Respondent concedes that the <aetna.net> domain name is confusingly similar to a trademark in which Complainant has rights, however, these rights do not belong exclusively to Complainant. The rights are shared by Complainant, other companies using “aetna” as or as part of their corporate name and the general public as a result of the origin of the “aetna” name. Respondent, other third parties, and the general public at large all have legitimate interests in respect of the name “aetna” as a result of the origins of said name. The name has origins in Greek mythology.
Prior to any notice from Complainant, Respondent made demonstrable preparations to use <aetna.net> but such preparations were disrupted by Complainant as result of their cease and desist letter. Respondent has redirected the URL, <aetna.net>, to a google search of Greek mythology after approximately three years of active research and preparations for its website so as to demonstrate its legitimate intent.
Respondent intends to devote the URL to a non-commercial use focused on Greek mythology.
Respondent has rights and legitimate interests in the domain names.
Respondent did not register or use the domain name in bad faith.
C. Additional Submissions
The Panel received information which was not in accordance with the rules and did not consider that material.
1. Complainant is a large insurance company that has been in existence since 1853 and has continuously used the name AETNA for many years resulting in considerable name recognition and goodwill in the AETNA name.
2. Complainant owns the AETNA trademark which was first registered in 1923.
3. Complainant owns or controls domain name registrations that correspond with its famous mark including <aetna.com>, <aetna.us>, <aetna.biz> and <aetna.info>.
4. Respondent registered the domain name <aetna.net> on November 2, 1999.
5. Respondent opened its website with a one-page display containing the words “Alternative Educational Training for New Arrivals”.
6. On December 31, 1999, Respondent notified Complainant that it had registered <aetna.net>.
7. Complainant sent a cease and desist letter to Respondent on January 4, 2000.
8. Thereafter, Complainant and Respondent entered into a series of communications which resulted in the parties agreeing to the transfer of the domain name registration to Complainant in consideration for an agreement by Complainant not to take action against Respondent as result of the controversy.
9. During this interval, Respondent changed the website content to show that the website was “under construction”.
10. Respondent failed to fully complete the transfer documents so that the domain name registration was never transferred as agreed upon by the parties.
11. On June 22, 2001, Respondent renewed the domain name registration for <aetna.net> through November 2, 2006.
12. After registration, Respondent removed the “under construction” page and redirected <aetna.net> to “Greek mythology” search results on <google.com>.
13. The domain name <aetna.net> is identical to Complainant’s trademark, AETNA.
14. Respondent has no rights or legitimate interests in respect of the domain name.
15. The domain name <aetna.net> has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Respondent concedes that the domain name <aetna.net> is identical or confusingly similar to Complainant’s trademark, AETNA. That is obvious. See BMW AG v. Loophole, D2000-1156 (WIPO Oct 26, 2000); Pomellato S.p.A. v. Tonetti, D2000-0493 (WIPO July 7, 2000).
Respondent takes the position that Complainant does not have rights in the mark, AETNA, as required under Policy, ¶ 4(a)(i). This is the case, Respondent contends, because the rights “do not belong exclusively to Complainant”. Respondent points out that there are organizations in existence that use the word “Aetna” as part of a name. Respondent did an Internet search and discovered “Aetna Insulated Wire”, “Aetna Building Corp.”, “Aetna Plastics Corporation”, “Aetna Manufacturing Canada Limited”, “Aetna Capital”, “Aetna Mobile Home Park”, and others. Respondent notes that there are cities in the United States named “Aetna” and also notes that there is a mountain with that name and a figure in mythology with the name.
Where a complainant does not have “exclusive rights” to a name, it cannot prevail under Policy ¶ 4(a)(i). See NM Rothschild & Sons Ltd. v. Corp. Internet Design Ltd. and Michael Decker, D2001-0854 (WIPO Aug. 29, 2001).
As a general rule, Panels have found that when a complainant shows a registered trademark that has acquired “incontestable status” under United States law, this alone constitutes sufficient rights to satisfy the requirements of Policy ¶ 4(a)(i). See Senco Prods., Inc. v. Camp Creek Co., Inc., D2000-0590 (WIPO Sept. 11, 2000); Robetel Electronique Inc. v. KapCom, Inc., D2001-0038 (WIPO Feb. 26, 2001). Complainant has offered clear and substantial proof of its trademark registrations in this case.
Respondent does not contend that the mark, AETNA, is a generic term nor does Respondent’s proof suggest that the term is generic. Proof is necessary on this issue such as was presented in Tough Traveler, Ltd. v. Kelty Pack, Inc., Mike Scherer, and Inking Pen Co., D2000-0783 (WIPO Sept. 28, 2000). Respondent makes no such showing. Comparing this dispute with the one decided in Viacom Int’l Inc. v. Bryan Dulsky, D2000-0961 (WIPO Dec. 5, 2000) makes it clear that Respondent has failed to show sufficient reason to justify a finding for Respondent under Policy ¶ 4(a)(i).
Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant shows that it has never authorized or licensed Respondent to use Complainant’s registered marks. Neither Complainant nor Respondent contends that Respondent has any registered trademarks or service marks of any kind. There is no evidence in the pleadings to suggest that Respondent has ever been known by the domain name at issue in this proceeding. Complainant contends that it has exclusive rights to use its registered marks. See Am. Online v. Tencent Communications Corp., FA93668 (Nat. Arb. Forum Mar. 21, 2000). As a result of Complainant’s showing, and Respondent’s apparent lack of rights and legitimate interests in the domain name, the burden must shift to Respondent to demonstrate Respondent’s rights and legitimate interests in the domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).
Respondent may demonstrate its rights and legitimate interests in the domain name by any of the methods wet out in Policy paragraph 4(c).
Respondent contends that, prior to any notice from Complainant, it made demonstrable preparations to use <aetna.net>, but such preparations were disrupted by Complainant as a result of their cease and desist letter. “Respondent submits that its almost three year dialogue with Complainant, and it having endured heavy-handed tactics by Complainant (to which Complainant itself admits) is evidence of its demonstrable preparations, and evidence that it intends to pursue a bona fide offering of non-commercial services should it prevail in this proceeding.” Other than to state that it intended to devote <aetna.net> to a non-commercial use focused on Greek mythology, Respondent produces no evidence of any kind to illustrate demonstrable preparations to use the domain name prior to registration or before receiving the cease and desist letter from Complainant. Respondent is required to present “concrete evidence” on such issues, not “mere personal assertions.” See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) wherein it was stated as follows: “Where a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion. This information is uniquely within the knowledge and control of the respondent. Failure of a respondent to come forward with such evidence is tantamount to admitting the truth of complainant’s assertions in this regard.”
The actions of Respondent after receipt of the cease and desist letter included a series of letters and communications between the parties which resolved itself into an agreement to transfer the domain name to Complainant in consideration for Complainant waiving any legal action regarding the registration of the domain name by Respondent. There is concrete evidence represented by the letters and e-mails between the parties. But none of this concrete evidence proves or even suggests any demonstrable preparations for use of the domain name in connection with a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i). Respondent presents no evidence of the type required under the reasoning of Do The Hustle, LLC v. Tropic Web, supra.
Respondent next contends that it was making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. See Policy ¶ 4(c)(iii). The evidence on this issue is as follows. Respondent, after registration, presented a web page on the site of <aetna.net> consisting of one page on which appeared the following language: “Alternative Educational Training for New Arrivals”, “Welcome to our new web site”. “Watch this web page for our new FREE ESL referral”. “For additional information contact us at the e-mail address listed below”. “Contact information” “firstname.lastname@example.org”. “Domain Parking Affinity hosting”. “This Site Parked At Affinity Hosting.” There is nothing in this language that indicates to this Panel that the site was intended as a “Greek mythology” website. After the cease and desist letter was received by Respondent the website was listed as “Under Construction”.
“It is true that Paragraph 4(c)(iii) of the Policy provides that ‘making a legitimate noncommercial or fair use of the domain name’ is among the circumstances that can demonstrate a respondent’s rights or legitimate interests in the domain name if-but only if-such circumstance ‘is found by the Panel to be proved based on its evaluation of all evidence presented.’ However, Respondent’s conclusory assertion about its …intended use…is insufficient to support the finding required by Paragraph 4(c).” see Senco Prods., Inc. v. Camp Creek Co., Inc., D2000-0590 (WIPO Sept 11, 2000). The Panel cannot conclude, based upon the evidence presented, that Respondent has proved by concrete evidence, that Respondent has ever made a legitimate noncommercial or fair use of the domain name <aetna.net>.
Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
The Policy places the burden of proof upon Complainant to show that Respondent registered the domain name in bad faith and used the domain name in bad faith. Policy paragraph 4(a)(iii). Complainant may do so by any of the methods set out in Policy paragraph 4(b).
Complainant presents two grounds upon which it relies to prove bad faith on the part of Respondent. The first contention is that “registration, passive holding and renewal of the domain name deprives Complainant of its right as a trademark owner to reflect its trademark in a corresponding domain name.” The second contention is that “Respondent was aware of Complainant’s famous mark at the time Respondent registered the domain name in November 1999, and even if Respondent was not aware of Complainant’s famous mark in November 1999…Respondent was most certainly aware of it in June 2001 when Respondent renewed the registration of <aetna.net> for five additional years.”
Complainant argues resolutely that the renewal of the domain name in June 2001, with full knowledge of Complainant’s marks and objection to use of the domain name, is evidence of bad faith registration and use. This argument cannot be sustained. The issue of bad faith renewal was carefully considered in Weatherall Green & Smith v. Everymedia.com, D2000-1528 (WIPO Feb. 19, 2001) where the Panel found that even though the respondent renewed the registration in bad faith and was at that time using the domain name in bad faith, these circumstances were of no consequence because it was not the intent of the Policy to extend the definition of abusive registration to include domain names originally registered in good faith but which later became infringing. The Panel stated: “But a registration of a domain name that at inception did not breach Rule 4(a)(iii) but is found later to be used in bad faith does not fall foul of Rule 4(a)(iii).” This reasoning was followed in Spirit Airlines, Inc. v. Spirit Airlines Pty, Ltd., D2000-0748 (WIPO July 25, 2001) where it was stated: “Renewal of a domain name registration in this respect is no different from renewal of a trade mark registration, it represents a continuation of the original registration. Were Complainant’s argument to succeed, all ‘innocent’ registrants of domain names would be at risk of becoming branded ‘cybersquatters’ as a result of a letter of notification coming in out of the blue.” The reasoning of Weatherall was followed in Substance Abuse Mgmt., Inc. v. Screen Actors Modesl [sic] Int’l, Inc. (SAMI), D2001-0782) wherein it was found that renewal is a mere “ministerial function” not covered under the Policy which could have been drafted to address both bad faith registration and bad faith renewal, but which does not, referring only to a registration having been obtained in bad faith. Thus, under the prior Panel decisions, Complainant’s bad faith renewal argument cannot be considered as evidence of bad faith registration.
As to the registration in 1999, Complainant contends that Respondent either knew or should have known of Complainant’s famous mark at the time of registration. Respondent says that at the time of registration, it was not aware of any of Complainant’s trademark rights in the AETNA mark. Respondent first posted a web page wherein the word AETNA never appears. What appeared was “Alternative Educational Training for New Arrivals.” The registration of the domain name was in November 1999. In December 1999, Respondent sent the following e-mail to Complainant. “To Whom it May Concern: We are the registered owners of aetna.net. and have been confused with your site. We are willing to include a link to your site on our homepage (which is currently under construction), if you would do the same. We would also consider other alternatives to clearing up this problem, and would be interested in any ideas you may have. Please advise us with whom we should speak regarding this situation. Sincerely, The Management of aetna.net.” The Panel finds Respondent’s conduct suspect. It is difficult to accept that a resident of the United States has never heard of AETNA as an insurance company which has been in business and promoting the name since 1853. One need only open a telephone directory for a listing of AETNA agents, as Respondent illustrates by including a California telephone book listing which was included in the Response to show a contended lack of rights on part of Complainant. Respondent never explains why it listed “Alternative Educational Training for New Arrivals” on the first web page at <aetna.net>. The Panel finds nothing in this title to suggest either a “Greek mythology” purpose or any purpose other than as a possible justification for shortening the name to AETNA. The timing of the e-mail in which Respondent announces “confusion” and asks Complainant for “alternatives to clearing up this problem” can easily be interpreted as an invitation by Respondent for Complainant to offer some sum of money to purchase the domain name registration.
Complainant immediately, upon receiving the e-mail, issued a cease and desist letter to Respondent with no offer other than to pay the ordinary transfer fee. Respondent, in response to the cease and desist letter, through a series of correspondence, agreed to transfer the domain name to Complainant. This agreement was never completed because Complainant would not initial a document prepared by Respondent to the effect that Complainant waived any legal action against Respondent, though Complainant had agreed in writing to forward such a written agreement upon receipt of the fully completed transfer documents. The matter plodded along until time for renewal transpired at which time Respondent renewed the domain name, after earlier agreeing to transfer the name to Complainant. The inference can be drawn that Respondent thinks there is something yet to be gained from Complainant by retaining the domain name.
The Panel finds Respondent’s conduct, though carefully done, consistent with the conduct discouraged in Policy ¶ 4(b)(i).
Further the passive holding of the domain name for three years, under the facts and circumstances of this case can be viewed as evidence of bad faith. Though both parties agreed to hold the domain name as an “under construction” site during the negotiations to transfer the domain name to Complainant, Respondent was under no obligation to keep it in that mode. If Respondent really intended to operate the site as a non-commercial “Greek mythology” operation, it could have done so under the authority of Policy ¶ 4(c)(iii) for the full duration of the three-year period without fear of Complainant’s objections. Passive holding of a domain name, under certain circumstances, can be taken as evidence of bad faith. See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
If the domain name was to be operated as a non-commercial “Greek mythology” site by Respondent, under Policy ¶ 4(c)(iii), then Respondent was under no obligation to entertain the idea of transferring the domain name to Complainant.
The Panel concludes that Respondent’s agreement to transfer the domain name to Complainant is an admission that Respondent had no rights in the domain name, that its use would create “confusion” between the domain name and Complainant’s trademark, and that Complainant should be the rightful owner of the domain name <aetna.net>. In a court of law this agreement would be enforced since there was a complete meeting of minds on the subject matter of the agreement.
Taking all of the facts and circumstances and proper inferences arising there from, the Panel is of the opinion that the domain name <aetna.net> was registered and thereafter used in bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000); Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000); Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000).
Complainant has satisfied the requirements of Policy ¶ 4(a)(iii).
It is the decision of this Panel that the domain name <aetna.net> now registered to Respondent, Ben F. Jacoby, Devorah E. Jacoby, d/b/a Jacoby Partners 1999-2, L.L.C., be TRANSFERRED to Complainant, Aetna, Inc.
Tyrus R. Atkinson, Jr., Panelist
Dated: November 22, 2002
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